Icann Watch has shamed me into commenting on Singapore’s application to register .SG (the country-code for Singapore) as a trademark, by wondering out loud what the Trademark Blog thinks on this. I had ignored the time yesterday because, to paraphrase Stephen Daedulus, “Domain Name politics is a nightmare from which I am trying to awake.”
First, as a matter of disclosure (and credentials, I suppose), I have advised clients on the registrabilty of top level domains as trademarks, and have an active matter on the topic, so I’m going to pull punches and merely set out the issues.
By way of background, there is no divine revelation or treaty as to who should be the manager of a country code. You have a four way brawl between (1) the sovereign, (2) the incumbent domain manager (which sometimes is a not-for-proft entity and sometimes is a for-profit entity like Verisign or Neulevel), (3) ICANN, and (4) Everyone Else. If this is of interest to you, you can click here for an unending list of materials on ccTLD management. Read RFC 1591 first.
So the news of a domain manager or sovereign filing for trademark protection for its ccTLD creates a parade of horribles. Will trademark protection give it undue power over (1) ICANN; (2) domain managers; (3) users?
My answer: no more power than it already has.
The article expresses and then rebuts the fear that if the country code is trademarked, then the domain name user becomes a licensee subject to control. But bear in mind that we already have a situation where people use email or promote websites which contain trademarked terms (AOL or HOTMAIL for example). These trademark owners, when they choose to intervene with content, do so through Terms of Service, not trademark. If a person uses the email address JOE@AOL.COM in connection with his business, that is understood not to constitute trademark use of AOL. He would have to actually name the business JOE@AOL.COM for it to rise to trademark use. That is certainly US and EEC law (and while I invite comment from Singaporean counsel, I would be shocked if if were not the law there as well).
So while Singaporeans may already have concerns over content management by their government (the article mentions that domain name registrants are subject to some sort of TOS), were the government to obtain .SG as a trademark, this would not add to those concerns. And we’re talking about Singapore.
As to mis-use of a trademark registration as an incumbency hedge, let’s get away from the Singaporean context (because there the domain manager is so closely aligned with the government). Would trademark registration by either the sovereign or the incumbent domain name manager tilt the balance of power.
If a sovereign already in charge of a ccTLD obtains a registration of that country’s TLD, then the power struggle is already over.
If a sovereign not yet in charge of a ccTLD obtains a registration, then it is going to use its power as a sovereign to obtain control anyway, and trademark law will be an afterthought.
If a domain manager obtains a registration, and then loses its delegation as domain manager, and a new domain manager steps in, then all other things being equal, that country’s court would likely allow the new domain manager to fairly use the TLD to describe the country codes.
I also dimly recall proposed ccTLD best practices requiring the domain manager to renounce intellectual property claims in the TLD itself.
As to this particular application, the article did not state what services were claimed (And I don’t believe there is an online Singaporean database to check), so I hesitate to comment further on that application.
Two asides – this might catch on among other ccTLD managers as a means of policing the registrar network. My response to that is that that can be accomplished with a simple certifiction logo. Furthermore the doctrine of trademark exhaustion will limit effectiveness of using a registration in the TLD itself as a policing tool in the re-seller market.
Second – there was an interesting detour some years ago when the operator of the alternative root TLD .WEB tangled with an entity named CORE, which wanted to run a .WEB TLD. Google IOD CORE .WEB for more on this.